eBay Inc.

Patent Trials and Appeals Board

Jul 17, 2020

14538696 - (D) (P.T.A.B. Jul. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/538,696 11/11/2014 Dane Glasgow 2043.F12US1 6136
49845 7590 07/17/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/17/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANE GLASGOW, STEVE YANKOVICH,
MARC PETER HOSEIN, SHWETA POGDE, SNIGDHA MOKKAPATI,
GOKULKRISHNA B. PILLAI, SRI HARSHA CHEVURU,
DINESH KUMAR DAMODHARAN, CHETHAN NARAYAN,
VINAY RAJASHEKAR NAGAR, and SURAJ CHHETRI
Appeal 2019-002859
Application 14/538,696
Technology Center 3600
BEFORE JOSEPH L. DIXON, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 6, 8, 9, 13–16, 19, and 24. Final

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2017). Appellant identifies the real party in interest
as Ebay Inc. Appeal Br. 2.
Appeal 2019-002859
Application 14/538,696

2
Act. 1. Claims 3, 4, 7, 10–12, 17, 18, 20–23, and 25–27 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a managed inventory. Title. For example,
a user may need firewood in the winter, but not in summer, and an order
may be placed from a predetermined electronic commerce site for more
firewood based upon various criteria. Spec. ¶¶ 24–26. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
l. A method comprising:

detecting, by a first sensor, that a quantity of an item has
changed;

in response to the detection by the first sensor, identifying,
by one or more processors of a computer system, a first quantity
of the item based on sensor data of a heat sensor that detects an
amount of heat generated by burning fuel;

comparing, by the computer system, the first quantity of
the item to a predetermined threshold;

determining, by the computer system, that the first
quantity is below the threshold;

informing, by the computer system, a user that the first
quantity is below the threshold;

and

in response to determining that the first quantity remains
below the threshold for a predetermined period of time after the
informing of the user that the first quantity is below the threshold,
Appeal 2019-002859
Application 14/538,696

3
by the computer system and without user intervention, placing
an order for a second quantity of the item.
REJECTIONS
Claims 1, 2, 5, 6, 8, 9, 13–16, 19, and 24 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., an abstract idea) without “significantly more.”
OPINION
1. 35 U.S.C. § 101
a. Legal Principles
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, under Step 2A, we first determine what concept the claim is
“directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before
us are drawn to the concept of intermediated settlement, i.e., the use of a
third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Appeal 2019-002859
Application 14/538,696

4
Concepts determined to be abstract ideas and, thus, patent ineligible
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If, under Step 2A, the claim is “directed to” an abstract idea, then,
under Step 2B, “we must examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at
221 (quotation marks omitted). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Id. (quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
On January 7, 2019, the U.S. Patent and Trademark Office
(“USPTO”) published revised patent subject matter eligibility guidance. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
2019 (“Revised Guidance”). Under the Revised Guidance, Step 2A of the
Alice two-step framework is divided in two prongs. For Step 2A, Prong 1,
Appeal 2019-002859
Application 14/538,696

5
we look to whether the claim recites any judicial exceptions falling into
certain groupings of abstract ideas (e.g., mathematical concepts, certain
methods of organizing human activity such as a fundamental economic
practice, or mental processes). For Step 2A, Prong 2, if the claim recites
such a judicial exception, we look to whether the claim recites any additional
elements that integrate the judicial exception into a practical application (see
Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–
(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then determine, under Step 2B
of the Alice two-step framework, whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)) or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.

b. Examiner’s Findings and Conclusions2
The Examiner identifies all of the steps as part of abstract idea. Final
Act. 6–7. The Examiner finds that the claims are not directed to “an
improvement to computer technology.” Final Act. 7. The Examiner

2 We note that the Final Action, Appeal Brief and the Examiner’s Answer
were mailed before the USPTO published the Revised Guidelines and,
therefore, does not rely on the Revised Guidelines. However, Appellant’s
arguments in the Reply Brief indeed rely on the Revised Guidelines. While
recognizing the Examiner’s conclusions in the Final Action, our analysis is
based on the Revised Guidelines. Patent eligibility under 35 U.S.C. § 101 is
Appeal 2019-002859
Application 14/538,696

6
finds the “abstract idea to include at least the judicial descriptor(s) of: certain
methods of organizing human activity, an idea of ‘itself’, [and] mathematical
relationships/formulas.” Final Act. 10; Ans. 9.
The Examiner analogizes to the Electric Power Group case, which
involved the abstract idea of collecting information, analyzing the
information, and displaying certain results, where this was found to be one
of certain methods of organizing human activity, which is very similar to
Appellant’s limitation of “informing a user.”3 Ans. 9.
The Examiner finds that the additional elements and computer
functions of one or more processors of a computer system or one or more
machines; a first sensor; and a heat sensor to be well-understood, routine,
and conventional functions when claimed in a merely generic manner. Final
Act. 11–12. The Examiner also concludes the claims “are directed to the use
of conventional or generic technology in a nascent but well-known
environment, without any claim that the invention reflects an inventive
solution to any problem presented by combining the two,” and “when
considered individually and in ordered combination, the examiner finds the
claims to be directed to ineligible subject matter.” Final Act. 12.
The Examiner distinguishes the McRO4 case and the Examiner
concludes the present case is different because the focus of the claims is not
on such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools, and the Specification gives no

a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012).
3 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
Appeal 2019-002859
Application 14/538,696

7
indication that the claimed could not have previously been automated and
“using computers to apply commonplace ideas-such as placing orders-is not
a patentable invention.” Ans. 10–11. The Examiner further finds that “[t]he
sensors are simply being used to gather data and perform generic functions
which the sensors were designed to do, i.e. sensing weight or sensing heat.
The general-purpose computer (Instant Application: ¶ 32) is simply being
‘applied’ to the abstract ideas.” Ans. 13.

Appellant’s Arguments5
Appellant argues that the Examiner does not present a prima facie
case of subject matter ineligibility in the rejection. Appeal Br. 6; Reply
Br. 2.
Appellant contends that all of the identified precedent does not
evidence that the six recited elements of claim 1 constitute an abstract idea
and the Examiner has not identified what the abstract idea is alleged to be.
Appeal Br. 9; Reply Br. 2. Appellant contends that the claims are not
directed to an abstract idea. Appeal Br. 10; Reply Br. 4.
Appellant identifies the Enfish6 case and contends that the present
claims are directed to an improved “computer system [that] without user
intervention, plac[es] an order” where the additional elements of claim 1
describe the method by which the computer system determines to place the
order, and automatically placing an order is not an abstract idea, but a useful
machine. Appeal Br. 12; Reply Br. 4. Appellant contends that the Examiner

5 We note that the Appeal Brief was filed prior to the Revised Guidance, but
the Reply Brief was filed after the Revised Guidance.
6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
Appeal 2019-002859
Application 14/538,696

8
has not identified precedent that supports the conclusion the claims are
directed an abstract idea. Appeal Br. 12.
Finally, Appellant contends that “[l]ike in BASCOM, the claims at
issue in this case are ‘not an abstract-idea-based solution implemented with
generic technical components in a conventional way’ because the
independent claims at issue recite specific operations for using multiple
sensors to determine a quantity of an item . . . , placing an order for a second
quantity of the item” where “none of these operations were well-understood,
routine, or conventional operations” at the time of the invention under step
2B.7 Appeal Br. 14.
Under the Revised Guidance, Appellant contends that the claimed
invention, taken as a whole, is directed to a system that automatically
determines when a quantity of an item has fallen below a threshold and
automatically places an order for the item, without user intervention and is a
“practical application.” Reply Br. 5– 6.

c. Discussion
Appellant argues claims 1, 2, 5, 6, 8, 9, 13–16, 19, and 24 as a group.
Appeal Br. 6, 10, 12. We select claim 1 to represent the group. See
37 C.F.R. § 41.37(c)(1)(iv).

i. Step 2A, Prong 1
For Step 2A, Prong 1, of the Revised Guidance, we find that the
emphasized portions of claim 1, reproduced above, recite elements that fall

7 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
Appeal 2019-002859
Application 14/538,696

9
within the abstract idea grouping of mental processes. The Revised
Guidance requires us to evaluate whether the claim recites a judicial
exception (e.g., an abstract idea). According to the Revised Guidance, to
determine whether a claim recites an abstract idea, we must identify
limitations that fall within one or more of the designated subject matter
groupings of abstract ideas. According to the October 2019 Patent
Eligibility Guidance Update produced by the USPTO, “a claim recites a
judicial exception when the judicial exception is ‘set forth’ or ‘described’ in
the claim.” See October 2019 Patent Eligibility Guidance Update Revised
Patent Subject Matter Eligibility Guidance, https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (“October Update”). The
Revised Guidance lists mental processes as one such grouping and
characterizes mental processes as including, inter alia, “concepts performed
in the human mind (including observation, evaluation, judgment, opinion).”
84 Fed. Reg. at 52. We find that the elements of independent claim 1
describe this judicial exception.
Specifically, we find that the emphasized portions of claim 1 set forth
the basic mental steps a human would take when evaluating in the human
mind whether they will need an additional quantity of an item. We find that
the limitations of claim 1 essentially describe steps of a mental process.
We acknowledge that claim 1 specifies various sensor data items and
a computer system. However, these additional device elements do not
further define or otherwise limit these additional device elements to any
particular thing or environment, such as the environment of “need [for]
firewood in the winter.” Spec. ¶ 24. Thus, we find claim 1 recites elements
that fall within the abstract idea grouping of mental processes.
Appeal 2019-002859
Application 14/538,696

10

ii. Step 2A, Prong 2
For Step 2A, Prong 2, of the Revised Guidance, we find that claim 1,
as a whole, does not integrate the recited mental process into a practical
application of the abstract idea. The Revised Guidance states that “[a] claim
that integrates a judicial exception into a practical application will apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 53.
The Revised Guidance further states that integration should be evaluated by
“[i]dentifying whether there are any additional elements recited in the claim
beyond the judicial exception(s)” and, based on certain considerations,
“evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.”
84 Fed. Reg. at 54–55. The Revised Guidance identifies considerations such
as whether additional elements yield an improvement to a particular
technology or a computer itself, correspond to the implementation of the
judicial exception with a particular machine, and/or apply the judicial
exception in some way beyond simply linking the judicial exception to a
particular technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
Here, as discussed above, claim 1 incorporates additional device
elements. However, we find that these additional device elements do not
integrate the mental process of claim 1 into a practical application. For
instance, we do not find that these additional device elements yield an
improvement in the functioning of a computer itself or to the particular
technology of managed inventory, neither do we find that these additional
Appeal 2019-002859
Application 14/538,696

11
device elements are any particular machine that is necessary to implement
the judicial exception or transform something to a different state.
Additionally, we do not find that these additional device elements apply the
abstract idea in a meaningful way to any particular technological
environment. We further agree with the Examiner’s finding for Step 2B of
the Alice two-step framework that these additional device elements, as
claimed, correspond at most to a generic computing structure. See Final Act.
12; see also Ans. 12–13.
In addition, we determine that claim 1 recites insignificant pre-
solution activity (“detecting . . . that a quantity of an item has changed”) and
insignificant post-solution activity (“placing an order for a second quantity
of the item”). See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42
(Fed. Cir. 2016) (addressing insignificant post-solution activity); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015)
(addressing insignificant pre-solution activity). The recited insignificant
extra-solution activity does not help integrate the recited mental process into
a practical application of the abstract idea.
Thus, we conclude that claim 1, as a whole, does not integrate the
recited mental process into a practical application of the abstract idea.
Additionally, we find Appellant’s argument that claim 1 improves the
functioning of a “computer system” unpersuasive. See Appeal Br. 12; see
also Reply Br. 5–6. We find that the Specification discloses the use of
generic data processing elements to perform the functions of the recited
abstract idea and does not “automatically determine[] when a quantity of an
item has fallen below a threshold and automatically places an order for the
item.” Reply Br. 5–6. See Spec. ¶ 118 (“machine 1500 includes a processor
Appeal 2019-002859
Application 14/538,696

12
1502 (e.g., a central processing unit (CPU), a graphics processing unit
(GPU), a digital signal processor (DSP), an application specific integrated
circuit (ASIC), a radio-frequency integrated circuit (RFIC), or any suitable
combination thereof) . . .”); see also Spec. ¶¶ 30–33.
Appellant also relies upon the extra-solution activity of the system for
“by the computer system and without user intervention, placing an order for
a second quantity of the item” as “a practical application.”8 Reply Br. 6.
We find that the claimed invention merely includes insignificant extra-
solution activity which does not result in a “practical application.” Parker v.
Flook, 437 U.S. 584, 585–86 (1978) (“In essence, the method consists of
three steps: an initial step which merely measures the present value of the
process variable (e.g., the temperature); an intermediate step which uses an
algorithm to calculate an updated alarm-limit value; and a final step in which
the actual alarm limit is adjusted to the updated value. The only difference
between the conventional methods of changing alarm limits and that
described in respondent’s application rests in the second step—the
mathematical algorithm or formula.”).
Moreover, Appellant’s arguments fail because the arguments are not
commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”); see also In

8 We note that the Summary of the Claimed Subject Matter section of the
Appeal Brief identifies paragraphs 103–106 of the Specification for the
“without user intervention” (Appeal Br. 3), but this disclosure pertains to a
different example than the claimed “heat generated by burning fuel” as
required by the language of independent claim 1. We leave it to the
Examiner to further clarify the supporting disclosures.
Appeal 2019-002859
Application 14/538,696

13
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts
. . . are not commensurate with the claim scope and are therefore
unpersuasive.”).
Therefore, based on our analysis under the Revised Guidance, we
agree with the Examiner that claim 1 is directed to an abstract idea.
Specifically, we find that claim 1 is directed to the abstract idea of a mental
process. As result, we focus our attention on Step 2B of the Alice two-step
framework.

iii. Step 2B
For Step 2B, we are not persuaded by Appellant’s argument that
claim 1 recites significantly more than the abstract idea itself. Step 2B of the
Alice two-step framework requires us to determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the judicial exception. Alice, 573 U.S.
at 221. As discussed in the previous section, we agree with the Examiner’s
conclusion that the additional device elements, when considered individually
and in an ordered combination, correspond to nothing more than a generic
computing structure used to implement the mental process. In other words,
these components, as claimed, are well-understood, routine, and
conventional and “behave exactly as expected according to their ordinary
use.” See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615 (Fed.
Cir. 2016). As discussed in the previous section, Appellant’s Specification
describes the computing environment in which the invention is performed.
See Spec. ¶¶ 30–33, 118. However, Appellant’s Specification gives no
indication that such a computing environment is anything other than a well-
Appeal 2019-002859
Application 14/538,696

14
understood, routine, and conventional computing environment. Thus,
implementing the abstract idea with these generic computer components
“fail[s] to transform that abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 221. Therefore, we agree with the Examiner that claim 1
does not provide significantly more than the abstract idea itself.
iv. Conclusion
Therefore, because claim 1 is directed to the abstract idea of mental
processes and does not provide significantly more than the abstract idea
itself, we agree with the Examiner that claim 1 is ineligible for patenting and
affirm the Examiner’s patent-eligibility rejection of claims 1, 2, 5, 6, 8, 9,
13–16, 19, and 24 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1, 2, 5, 6, 8,
9, 13–16, 19,
24
101 Eligibility
1, 2, 5, 6,
8, 9, 13–
16, 19, 24

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED